Wednesday, 28 November 2012

Ministerial Decree No. 1582, which was issued on 14 September 2012, has imposed an increase in the official fees for the protection of all registered industrial property rights: this affects trade marks, patents, industrial designs, utility models, commercial names, integrated circuits and geographical indications.

The new schedule of official fees is said to distinguish between local and foreign applicants (who form the preponderant majority).

Tuesday, 27 November 2012

This Monday, 26 November, the European Commission and the African Regional Intellectual Property Organization (ARIPO) signed a non-binding but nonetheless encouraging memorandum of understanding on the protection of traditional agricultural products from specific geographical locations or with specific characteristics. The Commission's announcement of this deal, "Commission supports protection of food and agricultural products' names in Africa", can be read in full here. At the time of posting this item, there was no corresponding item on theARIPO website, though Afro Leo estimates that it would only have been the work of a few minutes to make something available online.

The document, signed in Zanzibar, Tanzania, commits the ARIPO and the European Commission to work together in promoting geographical indications (GIs), including building a legal framework for GIs -- under which Africans would have to protect European GIs. This may prove unpopular in Africa, since Europe appears to have stockpiled a vast arsenal of GIs which it is seeking to protect globally, while Africa has relatively few. The Commission's press release states that the following names have been proposed as candidates for GI protection:

You could spend two years in a South African jail or be fined R2million (+-$250000) if you apply to register, use or licence .CapeTown, .Zulu or even .FafDuPlessis as a gTLD (general top level domain) anywhere in the world, without the permission of the South African government.

The Bill seeks to amend the ECT Act 2002 to bring it into line with the international community as far as communication is concerned and, for the most part, it seems a very good piece of proposed legislation. It deals with efforts to facilitate electronic trade, build confidence in electronic communications and improve security.

From an IP perspective, there are a number of amendments that affect how RSA's domain names are managed and governed. For example they have sought to remove confusion regarding the different "authorities" in the Act by simplifying the Domain Name Authority as ".zadna" and provided it with clearer governance principles and responsibilities. This also sounds positive.

Take-Downs

The Bill touches on the liability of Internet Service Providers by extending the remit of the Act to include wireless application service providers (WASPS) and bringing in some much needed balance to the take-down provisions. The current legislation provides powerful tools for take-down of website pages that infringe both copyrights and trade mark rights (something the rights owners in the US have been trying to introduce with difficulty), in particular, through a simple complaint process.

The Bill introduces a right of reply before a service provider is effectively obliged to take the page down. This means that the service provider has 10 business days to reply to a take down and if the complaint is then not resolved then a further 10 days to effect the take down or be liable for a "a related offence". There are also provisions to speed up the process where irreparable or substantial harm may be caused. In Afro Leo's humble opinion the wording could be tightened so that the provision is clearer.

Prohibition on uniquely South African symbols

However, the introduction of what are effectively provisions to protect geographical and cultural denominations expressed in the first paragraph of this post (see also the italics below) is the most interesting to this blog:

Firstly, South Africa does not have legislation that protects uniquely South African names and places, unless they are trade marks which very often they are not or plant varietal names. The way such protection is obtained is normally through international legislation designed for that purpose eg geographical indications and not through legislation designed to facilitate e-trade.

Secondly, it is odd for such severe penalties to be introduced for breach of what is now effectively claimed as a RSA brand or property. Take Facebook as an example. The site has many more followers then there are citizens in RSA and it also has many "uniquely" Facebook names. Yet if its rights are infringed its recourse, like every other company, is through the Courts where the penalty of two years in prison is not available.The same goes for Le Comite Interprofessionnel du vin de Champagne, the group entrusted to safeguard the "uniquely French name" Champagne.

Thirdly, as the ECT Act is designed to facilitate national and international e-trade it seems strange that there are provisions contained in it that make it an offence to register .zulu (which the explanatory note to the ECT Bill describes as "innately wrong") when, for example. the Queen (England) has not sought to imprison those who attempt to register .english or the White House those who attempt to register .liberty. In other words, it seems to grate against the concept of reciprocity and harmonisation which is a stated objective of the Bill.

Fourthly, the Bill proposes that ministerial consent first be obtained before an application for gTLD can be made. However, it is not clear how to go about asking for that consent. Readers may be aware that the Heraldry Act and Merchandise Marks Act have similar provisions for the protection of the national RSA flag that are largely ineffective as this post illustrates.

A fifth reason is that those who have applied for gTLDs are already subject to a process whereby governments and communities can object to the registration of a gTLD. The basis of the objection is wide enough to include public interest grounds. See for example, the objection procedure here.

Lastly, there are some practical problems. The proposed amendment:

(5) No person may use, license or apply for registration anywhere in the world of a

geographic or cultural qTLD that is uniquely South African without the written permission

of the Minister, which qTLD may by way of example, include any reference to or be the

same as a South African national language, a South African place name, a South

African heritage site, a South African historical event, a South African product or service,

or a South African national team or national representative of any kind.

For example, what is uniquely South African? There are so many place names that are inherited from names of places in other countries (Margate, Ramsgate, East London, Hyde Park, etc) that one probably cannot say that they are uniquely South African albeit that they are protectable place names.

There is a possiblility too that if the political party COPE (whose name comes from a South African heritage name) had to apply for a gTLD for its members, they would need to seek the permission, most likely from an opposing party Minister. The fracas that occurred when COPE was established indicates some expected difficulties with that process - see Tune in live for ANC v COPE name battle.

There is also the difficulty of determining who or what is a uniquely cultural property of the country. If one accepts that the Protea (our national flower) is a uniquely South African property (forgetting for a moment about the Protea hotel chain) then the cricket team Proteas is too (also as the name of a national side) but what about its players who are citizens of the country made famous by the national team? Faf Du Plessis's mercurial efforts yesterday, for example, have made him a national hero. Does he by extension become a cultural property and is he a "national representative"? If so (and it looks likely), the provision could impinge on his right to commercialise his own image or benefit commercially from his own success.

National symbol protection

Of course the idea behind protecting South African property is correct. We have experienced a Swiss national trying to claim exclusivity in Europe for "biltong", there have been difficulties protecting "rooibos", countries like Ethiopia have had to go to great lengths to protect their coffee region names and, in Kenya, the Kikoi has been the subject of a legal tussle between nations. However, Afro Leo is not persuaded that the place for that protection is in a national Act of this kind for the reasons explained above.

Monday, 26 November 2012

Foreign direct investment (FDI) into any country is normal and often said to be good for socio-economic growth. It can also come indirectly through uncoventional means - in the case of most developing countries. Interestingly, note how wikipedia cites, among others, special investment privileges as one of the reasons behind certain FDI. (Afro Leo wishes to know if purchasing a domain name in a foreign country - even where you plan not to have a physical presence there - should be classified as FDI; and if so, should reasons for such FDI also include: "an assumed" lax law enforcement regime and the provision of safe server hosting services for all types of activities?). Well, if you wished like Afro Leo, you may well end up disappointed like Kim Dotcom, the Megaupload founder.

This Leo came across this news article which reports that Megaupload's impending website www.Me.ga has been blocked in Gabon. At the announcement, Gabon's Communication Minister, Blaise Louembewas quoted saying: "Gabon cannot serve as a platform for committing acts aimed at violating copyrights, nor be used by unscrupulous people". (Afro Leo noticed that the registrar, Gabon Telecom, does not currently have a functioning website. Has it been blocked too? He also cheekily asks, "Was Megaupload planning to set up and create jobs in Gabon?")

Gabon appears to be serious about protecting intellectual property rights; if so, this Leo thinks that a look at its IP office's website (if any) would give an indication. Has Gabon maintained and/or improved upon what we saw last year? Afro Leo is happy to say, "yes it has". On visit, you will find that the website's background now has an aura that would make any visitor feel that it has come through to an entity with an interest in advancing human creativity. Further, you would find more information on the website including the recent activities of the office.

Afro Leo now knows that relocating domains to tiny, and/or lesser-known, African countries may well be out of bounds for certain "investors", or in Mr Louembe's words, "unscrupulous people", but has Gabon done this on its own initiative or was it a publicity stunt? Crucially and forward-looking, what does it say about Gabon on IPRs?

Friday, 23 November 2012

By WPPT Notification No. 83: WIPO Performances and Phonograms Treaty, the World Intellectual Property Organization (WIPO) informs the world that the Government of the Republic of Ghana deposited last week its instrument of ratification of the WIPO Performances and Phonograms Treaty. That Treaty will enter into force, with respect to Ghana, on 16 February 2013.

Ghana is the 91st country to opt for the WPPT. You can check the full list of committed countries here.

Wednesday, 21 November 2012

I was recently invited to present at a seminar for firm
clients on international IP developments in 2012 that are useful to everyday
business. This is in turn forced me to consider why would it be useful, for
example, to discuss or even mention the Apple V Samsung global IP battle or
the Laboutin appeal decision or the latest decisions on the Harmonisation
Directive?South Africans are self sufficient people who
improvise by nature and most work in conditions where international practise in the developed world is not always practical or affordable and
sometimes, not useful. We are the entrepreneurs of the global economy with a natural aversion to being told what to do or how to do it. All of this can lead to frustration as this amusing letter from US based IP lawyer in 1970 so clearly demonstrates: The lawyer accuses the Registrar of Trade Marks at the time as having "not yet climbed out of the slime in
which he was spawned..". As I said - it is a delightful read.As
a result, an International Update can easily become patronising or irrelevant unless it truly
is useful or interesting or made relevant for local business people. From an IP perspective, we are sometimes obliged to focus on international
developments. This is because we have obligations under various agreements and
they include TRIPS and Berne that impose minimum standards for our IP laws in
return for other benefits, like favourable conditions for international trade
and mutual respect for IP.

There are occasions where we are gently (and sometimes, not
so gently) persuaded to follow international developments. This was highlighted
by the US reaction to the first decision of the High Court (then Supreme Court)
when Mcdonalds lost a trade mark battle against a local. South Africa
was inserted on the 301 Report for not respecting international IP (see 1995 comments here). Another example is 2010
World Cup where we were persuaded to adopt very strong and new IP laws in favour
of sponsors, in return for hosting the tournament.

There are also occasions where we just ought to follow
international precedent. We generally recognise the benefit of
using and adopting wording and judgements elsewhere, especially in Europe from
which most of our IP legislation is taken. The SCA decision is Cowbell, for example, states:"Albeit in the context of the interpretation of a European Community Council
Directive, the European Court of Justice in Sabel (at 223 - 224) made
some observations that are pertinent to the present issue:..."On the other hand, we don’t have to follow anyone. We are a
national state with our own laws. There are also times we are gently
(and sometimes, not so gently) persuaded against following an international
agenda or norms. This was recently highlighted by the refusal to host the Africa IP forum
which was due to take place in Cape Town earlier this year due to pressure groups
that protested that the agenda lacked sufficient “development focus”.And finally, there are times when we simply ought not to
follow international developments and the best way to illustrate this is by borrowing
the message and, ironically, the IP associated with HSBC’s marketing campaign alongside.However, we also occasionally lead. This year alone two decisions, namely Zonquasdrift (the similarity of "wine" and "grapes" for trade mark infringement purposes currently on appeal) and Zemax (the nature of the consumer when considering pharma drug names) are likely to be cited internationally because they deal with novel concepts (Zonquasdrift) or provide SCA judgements (Zemax) on existing issues that are not settled elsewhere.

Monday, 19 November 2012

Back in August, this Leo was disappointed to report that Burundi backtracked on the once upon a time online presence for its intellectual property office. In that piece, he wondered why Burundi (or any other African country) would not consider taking a leaf out of Ethiopia's book on how to commercialise certain agricultural produce using IP as a tool. ("Don't worry, Tanzania listened", says Afro Leo).

According to this report, a team from Tanzania - sponsored by WIPO and led by Engineer Adolph Kumburu, the Director General of the Tanzania Coffee Board (TCB) - attended a workshop in Ethiopia to learn about coffee branding. Engineer Kumburu said that the essence of the visit was to study the role of IP rights in promoting
agricultural exports including procedures and processes based on the
Ethiopian experience in branding coffee for exports. He also stated that lessons learned would ensure Tanzania's
ownership of its own coffee brands.

Is this Afro Leo's face?

Well done, Ethiopia, for leading the way on this particular area in Africa; but what about the online presence which this blog reported last year? What has changed in 12 months? Well, readers would find that www.eipo.gov.et, as of this morning, now comes up with "Service Unavailable" (Afro Leo is not sure whether the website was simply down for maintenance or have been taking off cyberspace completely and forgotten. He hopes it is temporal, and will revisit the website later since this is unlike the Ethiopians.).

This Leo doesn't need a cup of coffee to be active throughout the day; but, he would like to try the Ethiopian Harrar™ - without the Afro Leo look-alike fluff.

--------------------------------------------------------------------------------------------------------------------------------------------The war between Ethiopia and Starbucks over a cup of coffee, see hereTanzania's coffee beans high in price and in demand at auction, see hereDoom and gloom: Will Ethiopian wild coffee soon be a thing of the past? see hereIP rights, big corporations (GM crops) versus poor farmers, see here

"Rwanda takes over management of '.rw'" is the headline of an interesting and informative note for World Trademark Review by David Taylor and Laetitia Arrault (Hogan Lovells LLP, Paris). As the authors explain:

"...

‘.rw’ had initially been delegated to a Switzerland-based company, NIC Congo - Interpoint SARL, behind which was an individual named Frédéric Grégoire. Grégoire had obtained the ‘.rw’ ccTLD back in 1996 when the internet was still in its early stages and had not really reached the African continent - and Rwanda was still recovering from the 1994 genocide. Around the same time, he also obtained various other African ccTLDs such as ‘.bi’ (Burundi). For such ccTLDs, Grégoire was listed as technical contact, and as such he had the responsibility to operate them. Interpoint also operated ‘.zr’, the ccTLD for Zaire, and when the country became the Democratic Republic of the Congo after the first Congo War, Interpoint approached ICANN and obtained the redelegation of the newly created ‘.cd’ ccTLD which was to replace ‘.zr’. However, since then the ‘.bi’ and ‘.cd’ ccTLDs have both been redelegated by ICANN to local organisations (in 2002 and 2011, respectively), and Rwanda is now the latest African country to have obtained the same.

It has however been a long and difficult road. It all started in 2002 when the Rwanda Information Technology Authority sent a formal letter to ICANN to obtain the redelegation of the ‘.rw’ ccTLD. Unfortunately, this first approach did not bear any fruit, notably because of ICANN's recommendation that the ccTLD had to be managed by a private institution. This resulted in the creation in 2005 of the Rwanda Information Communication and Technology Association (RICTA), a non-profit making organisation representing the Rwandan internet community, formed with the objective of managing the ‘.rw’ ccTLD. RICTA filed a first request for redelegation to ICANN in 2006, but this was finally closed because the discussions with NIC Congo - Interpoint SARL and the finalisation of the proposed action plan were not progressing. In January 2012 RICTA, supported by the Rwandan government and a number of private bodies, applied again for the redelegation of the ‘.rw’ ccTLD, and ICANN approved it in September.

...".

This note also provides further background and an upbeat message for African nations intent on taking responsibiity for the destiny of their own country-levels.

Monday, 12 November 2012

In contrast to the fortunes of Equatorial Guinea, this Leo can't help but to simply report that Eritrea is yet to see any real urgency, if not need, for a website for its intellectual property office. It appears that the political turmoil between Eritrea and its neighbour, Ethiopia, is still a growing concern and one which would further hamper its fledgling economy.

Afro Leo wishes Eritrea all the best.

PAIPO: From piping up to sizing up:A very good friend referred this Leo to this post written by Mr Sadulla Karjiker which further wades into the PAIPO debate. Mr Karjiker argues, among others, that since a draft statute is the only thing known to be in existence by all accounts, there is not yet a clear basis to criticise PAIPO. He asks: Would the resources which are to be spent in such an
endeavour not be better utilised in ensuring that the intellectual property
registries and laws of the various African states are improved in order for
them to participate in existing international registration systems such as the
Madrid Agreement and Protocol, administered by WIPO, for trade marks?
Afro Leo has not only spotted that Mr Karjiker shares, to some extent, a similar view to that of Sara Moyo, but also that readers of this blog are not the only ones to have witnessed the poor (or lack of) online presence of some of the IP offices in Africa - including the regional IP organisations.

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Eritrea ranks low in the World Bank's Doing Business report, see here
PAIPO petition gains 384 supporters, see here

Monday, 5 November 2012

Whilst politicians and stakeholders in the United Kingdom are still deliberating and shivering over the costs of building a new airport or additional runways, the government of Equatorial Guinea has just opened one at the cost of $375 million - thanks to their oil riches. So, with that figure in mind, one would feel that the country, like many other resource-rich ones in Africa, is not that poor, and that the Council of Scientific and Technological Research (Presidency of the Government) should be able to afford a website, right? (Afro Leo knows Equatorial Guinea can afford it) .Well, sadly, this Leo could not even find a website for any government ministry or parastatal in Equatorial Guinea, not to mention one for its IP office like we discovered last year.

Equatorial Guinea is one of the Member States of the OAPI (this Leo feels the OAPI requirea website facelift and more support) and we all know that most Member States tend not to have an online presence for their IP office.

OAPI, what do you have in store for us?

Just in case small businesses, entrepreneurs, researchers and government bodies in the field of technology in OAPI Member States are not aware, (Because there is no website or social media tool to inform them, adds Afro Leo) there is actually a fund set up to foster inventions and innovations in these countries. To find out about the Help Fund for the Promotion of Invention and Innovation (FAPI), please see here.

Forget piping up on the uncertain, duplicating and upcoming PAIPO; are you also aware of what the OAPI is getting up to in terms of harmonising counterfeiting policies and IP laws in Member States? click here to find out (Afro Leo's warning: sorry, Google translated link; the English tab on the website doesn't work as it should).